Martin Garbus, Esq. (MG 6261)
Edward Hernstadt, Esq. (EH 9569)
FRANKFURT, GARBUS, KLEIN & SELZ, P.C.
488 Madison Avenue
New York, New York 10022
(212) 826-5582
Attorneys for Defendants Eric Corley a/k/a
Emmanuel Goldstein and 2600 Enterprises, Inc.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
X
UNIVERSAL CITY STUDIOS, INC., PARAMOUNT PICTURES CORPORATION,. METRO-GOLDWYN-MAYER STUDIOS INC., TRISTAR PICTURES, INC., COLUMBIA PICTURES INDUSTRIES, INC., TIME WARNER ENTERTAINMENT CO., L.P., DISNEY ENTERPRISES, INC., and TWENTIETH CENTURY FOX FILM CORPORATION,
Plaintiffs,
- against -
ERIC CORLEY a/k/a "EMMANUEL GOLDSTEIN"
and 2600 ENTERPRISES, INC.,
Defendants.
00 Civ. 0277 (LAK)(RLE)
X
DEFENDANTS' MEMORANDUM OF LAW IN OPPOSITION
TO PLAINTIFFS' MOTION FOR A PROTECTIVE
ORDER, WHICH SEEKS A GRANT OF BLANKET IMMUNITY
FROM GIVING TESTIMONY AND PRODUCING DOCUMENTS ON
GROUNDS OF ATTORNEY-CLIENT AND WORK PRODUCT PRIVILEGES
Preliminary Statement
Defendants Eric Corley, a/k/a "Emmanuel Goldstein", and 2600 Enterprises, Inc., ("Defendants"), by their attorneys, Frankfurt, Garbus, Klein & Selz, P.C., respectfully submit this memorandum of law in opposition to plaintiffs' motion for a protective order. Plaintiffs are essentially seeking a grant of blanket immunity from giving testimony and producing documents on the alleged grounds that all communications between and among the MPAA, the DVD CAA and the individual corporate movie studio plaintiffs are shielded from disclosure by the attorney-client and attorney work-product privileges. The documents and testimony show not only that plaintiffs' case is unsupportable, but that they knew it to be without basis at the time they filed, and since October 1999.
The breadth of the plaintiffs' privilege claim is enormous and virtually all-encompassing. Without regard to who initiated the communications and whether it was primarily motivated by business concerns, as opposed to seeking legal advice, and thus would have taken place in any event, plaintiffs seek completely to shield
all communications between MPAA counsel and MPAA members concerning the DCMA, CSS and DeCSS;
all communications between MPAA in-house counsel and MPAA investigative personnel and consultants regarding DeCSS; and
all communications between and among MPAA counsel, MPAA members, and counsel for the DVD CAA, regarding CSS, DeCSS, other copy protection and anti-circumvention measures, and litigation, including this case, undertaken to limit the harm from DeCSS.
(Plaintiffs' Notice of Motion, at 2).
Plaintiffs, we believe, are withholding thousands of pages of relevant and discoverable material detailing information gathering activities that were undertaken by the MPAA on its own initiative as part of its day-to-day ordinary business operations and without any specific request for legal advice from its members. Plaintiffs are not only refusing to produce large amounts of extremely relevant materials, but they will not even inform defendants what they are withholding or why. For example, SONY has withheld approximately 500 pages of documents without providing any of the information required by Fed. R. Civ. P. Rule 26(b)(5). No privilege log has been furnished by the MPAA or any of the plaintiffs. This is clearly inadequate and, standing alone, warrants the summary denial of plaintiffs' motion.
Plaintiffs' motion must also be denied because it makes a mockery of the discovery process. Plaintiffs proceed on the fundamentally erroneous assumption that raw data and facts can be wholly immunized from discovery simply by filtering them through the MPAA's in-house and outside attorneys. Purely factual information, however, is never shielded from discovery. The attorney-client privilege is intended only to protect communications by a client to a lawyer for purposes of seeking legal advice. It does not insulate studies and reports that would have been conducted and prepared in the normal course of the MPAA's business as part of its day-to-day anti-piracy efforts.
Defendants submit that this Court need not wrestle with thorny privilege issues because, as a threshold matter, the available facts clearly demonstrate that plaintiffs knowingly waived any otherwise applicable privilege by putting the matters "at issue" both by the filing of this action and by taking very aggressive and public stances on the issues through press-related and other activities of the MPAA. For example, the MPAA takes credit for the passage of the DMCA, which is the product of intensive lobbying efforts, to protect an industry-wide standard, DVD, which the MPAA also negotiated with the DVD CAA. (E.g., Declaration of Fritz Attaway, dated June 13, 2000, at 3)("I represented the MPAA and its member companies in connection with the process that led to the passage of the Digital Millennium Copyright Act. . . . I also represented the MPAA and its member companies in connection with the three-industry negotiations (sic) led to the adoption of the Contents Scramble System ('CSS') as an industry-wide standard for protecting the content of the member companies' film from the risk of digital copying").
The knowledge and motives of the MPAA in filing this action are very much at issue and are central to the defense. Plaintiffs learned in October 1999 of DeCSS. They investigated for three months before the MPAA filed this suit for them. They determined what DeCSS was, how it worked with DVDs, determined hundreds of sites carried the code and initiated a large publicity campaign centered around it. The results of these investigations are vital, particularly since it now seems that the MPAA itself and some of its allies concluded, prior to commencing this litigation, that DeCSS was not a threat. In documents produced by Paramount but not the MPAA after the depositions of Jack Valenti and Fritz Attaway, Jack Valenti states that "[t]he so-called CSS Hack is fairly useless"; and Macrovision called "the CSS Hack . . . a minimal threat to copyright owners." See Hernstadt Decl., Exhs. A and B. Despite their claim that DeCSS poses a real and immediate threat that warrants broad injunctive relief, plaintiffs and the MPAA now resist virtually all discovery directed specifically at their knowledge of the threat -- or that it is not a threat -- which would expose their position. Because of the self-initiated involvement of Mark Litvack, counsel to the MPAA anti piracy group, the MPAA and plaintiffs claim that most, if not all, knowledge they might have about DeCSS, including information concerning past or ongoing investigations into such matters, is the subject of privileged attorney-client communications.
Plaintiffs claims on this motion are untenable. On the record before the Court, there can be no doubt that conducting investigations, gathering and compiling information, hiring experts and investigators, and providing technical support, is very much the day-to-day business of the MPAA. The MPAA functions much like an insurance company that investigates accidents, gathers information, and processes claims for its insureds. It is a separate and independent non-profit entity, which collects dues and assessments from its members to fund its activities. Like an insurance company, as part of its daily operations, the MPAA files and administers lawsuits in the name of its members. Unlike an insurance company, the MPAA also uses the fruits of its investigations to conduct public relations battles in support of their litigations.
Plaintiffs have made no attempt to meet their burden of proof. The MPAA, for example, has not provided defendants or the Court with a copy of its by-laws, or any membership agreement, or retainer agreement, or joint interest agreement with any of the plaintiffs that would help to define the relationship and understanding, if any, existing between and among them. In that regard, it should be kept in mind that the plaintiffs are day-to-day business competitors, so any agreement to act as allies must be well defined.
Although plaintiffs have blocked discovery on virtually every aspect of the MPAA's activities on grounds of confidentiality and privilege, the very few facts that have emerged prove that the various reports and studies generated by the MPAA, including the work of the outside consultant and now designated expert Robert Schumann, would have been done in the ordinary course of business, without regard to its possible efficacy (or more likely disutility) in future litigation, civil or criminal, in order to facilitate day-to-day business planning and policy making functions of the MPAA. Plaintiffs produced Robert Schumann and Kenneth Jacobsen, claiming they would answer all questions. Schumann, as it turns out, was on the payroll of Proskauer Rose, knew nothing of the plaintiff companies' efforts and was barred by the Proskauer lawyers on the grounds of privilege from testifying about entire areas of very significant facts and MPAA investigations and findings.
The MPAA's website, for example, describes its anti-piracy program and function as follows:
The Motion Picture Association of America (MPAA) serves as the voice and advocate of the American motion picture industry. On behalf of its member companies, the MPAA directs a comprehensive anti-piracy program. Begun in the U.S. in 1975, the program has several objectives: to strengthen industry security measures, to strengthen existing copyright protection through legislative activity, to assist local governments in the investigation and prosecution of piracy cases, and to provide technical support in the criminal and civil litigation generated by such investigations.
http://www.mpaa.org/anti-piracy/content.htm.
The Court may infer from the limited information provided by plaintiffs, or readily available from public records, that the discussions and documents as to which privilege is claimed would have taken place or been generated in any event (and not "because of" or "in anticipation of litigation") in order to facilitate the MPAA's ongoing legislative lobbying efforts, as well as negotiations with DVD licensees, such as Matsushita, Toshiba (who, it should be noted, were adverse and on opposite sides of the table at the time of the negotiations), and the DVD CAA. For example, the material sought by defendants, including studies conducted by the MPAA about new technologies and circumvention, was the subject of MPAA President Jack Valenti's testimony before a Congressional Subcommittee, on October 28, 1999, on the dangers and threats posed by internet piracy. See http://www.mpaa.org/jack/99/99_10_28a.html.
Every one of the plaintiffs and the MPAA have utterly failed to sustain their burden of proof on this motion by, in particular, failing to furnish defendants and the Court with the required privilege logs detailing, among other things, the dates of meetings, the names and identity of persons present at such meetings, and a sufficient description of the subject matter of the discussions that took place, for all oral communications for which the privilege is claimed, and similar information for all documents that have been withheld from production. Neither the Court nor defendants know what is being withheld or why. Two plaintiffs have produced no documents or testimony at all. The claims of privilege must be evaluated on a case-by-case basis with respect to each oral communication and document (it is impossible on this "record"), and, for that purpose, the Court should conduct an in camera evidentiary hearing as to oral communications, and an in camera review of documents, to determine whether invocation of the privilege is appropriate in each instance. The important First Amendment interests at stake demand that this albeit time-consuming process be pursued with special rigor in this case.
Plaintiffs have avoided this process, thereby frustrating defendants' right to meaningful discovery and severely hampering their ability to discuss the issues in this motion with any specificity, by offering the MPAA's testimony (in place of an appropriate privilege log) with a host of declarations totally unrelated to documents which contain sweeping and ipse dixit assertions that all communications took place, and all documents were generated, with the expectation that they would be kept confidential and protected by the attorney-client, joint or common interest and/or attorney work-product privileges.
Finally, even if plaintiffs' claims of privilege were otherwise proper, the facts clearly show that the information sought by defendants is critical to the defense of this action and is not available from other sources. Accordingly, the work-product privilege, if there were one, must give way in this case to defendants' substantial need for the information. Plaintiffs should produce the documents and their witnesses should testify.
ARGUMENT
I
PLAINTIFFS HAVE FAILED TO MEET
THEIR BURDEN OF PROOF AND THEIR
MOTION SHOULD BE SUMMARILY DENIED
Overview of the Applicable Law
As noted recently in National Congress For Puerto Rican Rights v. City of New York, 99 Civ. 1695 (SAS), 2000 U.S. Dist. LEXIS 6083 (May 8, 2000), "[i]n federal actions, discovery should be broad, and all relevant materials which are reasonably calculated to lead to the discovery of admissible evidence should be [discoverable]." Id. at *2 (quoting Morrissey v. City of New York, 171 F.R.D. 85, 88 (S.D.N.Y. 1997). The standard of relevance for discovery purposes is broadly defined to encompass "any matter that bears on, or that reasonably could lead to other matter that could bear on, any issue that is or may be in the case." Daval Steel Products v. M/V Fakredine, 951 F.2d 1357, 1367 (2d Cir. 1991)(quoting Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)); see also Morse/Diesel, Inc. v. Fidelity & Deposit Co., 122 F.R.D. 447, 449 (S.D.N.Y. 1988)(term "reasonably calculated" in Fed. R. Civ. P. 26(b)(1) means "any possibility that the information sought may be relevant to the subject matter of the action"); Martin v. Valley Nat. Bank of Arizona, 140 F.R.D. 291, 300 (S.D.N.Y. 1991); 4 James Moore & Jo Desha Lucas, Moore's Federal Practice, 26.51[1] (2d ed. 1991).
The privilege operates to obstruct access to otherwise discoverable evidence, contrary to the precept that "the public has a claim to every man's evidence." 8 Wigmore, Evidence 2192 at 71 (McNaughten rev. ed. 1961). The Court's task is to ensure that a blanket assertion of the privilege does not improperly block access to discoverable evidence. In re Bairnco Corporation Securities Litigation, 148 F.R.D. 91, 97 (S.D.N.Y. 1993).
However, even the specific advice and opinions provided by an attorney to a client generally are not privileged. The attorney's communications to the client are afforded derivative protection only to the extent they would reveal the client's communication of information to the attorney. Consequently, as Professor Paul R. Rice notes, "attorneys' communications summarizing the state of the law on a particular area, or based upon information from third parties (including public records) and other nonprivileged sources, or acquired by the attorneys from public records, are not protected." 1 Paul R. Rice, Attorney-Client Privilege in the United States, 5:2 (West 2nd ed. 1999)(hereafter referred to as "Rice, Attorney-Client Privilege") In the same vein, Professor Rice notes that "a lawyer's disclosure to a client of facts within the lawyer's personal knowledge, however, will not make those facts or the communication containing them privileged." Id.
Nor does the privilege, for example, cover factual information or the underlying facts communicated in an otherwise privileged conversation or document. See Upjohn Co. v. United States, 499 U.S. 383, 395 (1981)("The privilege only protects disclosure of communications; it does not protect disclosure of the underlying facts by those who communicated with the attorney."). See also 1 Rice, Attorney Client Privilege, 5.1. ("An important, but commonly misunderstood limitation of the privilege is that it does not protect the information contained within communications to an attorney.")(emphasis in original).
The privilege protects only the fact that the information was communicated, not the underlying information itself. Id. 5:2. As Professor Rice explains:
a client is not shielded from compelled disclosure of information simply because it was previously communicated to the attorney, so long as that information is responsive to an inquiry other than , in substance, "What did you say to your attorney?" . . . The client and his attorney would only be protected from revealing that those same facts had previously been communicated by the client to the attorney. Therefore, information not otherwise privileged will not acquire privileged status simply by being communicated to, or filtered through, the attorney.
Id. See also United States Postal Serv. v. Phelps Dodge Refining Corp., 852 F. Supp. 156, 163-64 (E.D.N.Y. 1994)(finding documents not privileged because "all were written for some other purpose than to seek legal advice and would have been prepared whether or not the attorney was sent a copy").
In Bairnco, a "harder" case, the court summarily overruled a claim of "joint defense" or "common interest" as to documents created by a multi-member organization that handled asbestos-related personal injury claims against member companies (akin to the information gathering and lobbying functions of the MPAA) because the material in the documents was factual on its face. The court stated:
[W]e find the contents of the documents in question to be of a nature that falls beyond the bounds of the privilege claimed. After reviewing each of the documents in camera, we conclude that they cannot be characterized as communications pertaining to defense strategy, or designed to further a common defense in any particular litigation or claim for that matter. Nor can they be portrayed as relating to elements of a broader claims resolution strategy adopted by the facilities. Rather the documents relate generally to statistics summarizing the status of asbestos claims processing and litigation, charts classifying the nature of claims by various categories, lists detailing the disposition of outstanding claims, related costs and the filing of new claims, and other similar data. Keene cannot invoke the joint defense privilege to protect such information from discovery.
148 F.R.D. at 102 (citations omitted).
Nor does the attorney-client privilege, even when applicable, insulate against a probing examination of what positions, policies and actions the MPAA and the plaintiffs have taken before and after receiving legal advice. This is a critical point, since even if defendants cannot inquiry into the substance of discussions at a particular MPAA meeting (which they can), they can question plaintiffs about what actions were taken immediately after the meeting:
The attorney-client privilege protects the client's communications to the attorney in order to encourage more open communications from the client to the attorney. Attorney's responsive communications that reveal the content of the protected client communications receive a derivative protection so that the client can be assured that his confidential communications will be neither directly or indirectly accessible to others. The derivative protection ends here. The privilege does not extend to decisions made by the client based on the legal advice the client received. Since the actions taken by the client do not have to be consistent with the advice given an extension of the privilege to client decisions would be unwarranted. Revealing client actions or decisions would disclose neither the substance of the recommendation nor the content of the client's privileged communications upon which the decisions/actions were based. Disclosure of the client's action, therefore, would not discourage the conduct that the privilege was designed to encourage.
1 Rice, Attorney-Client Privilege, 5:15 (footnotes and citations omitted).
Accordingly, all of the documents demanded by plaintiffs regarding materials sent to or used by Robert Schumann that were demanded during the course of his deposition, and all of the documents related to the MPAA's investigation of DeCSS as demanded during the deposition of Kenneth Jacobsen are not privileged and must be produced. See Declaration of Leon Gold , Exhs. 1-3 (defendants' document requests). For the same reasons, Defendants must be permitted to complete the depositions of Schumann and Jacobsen on these matters.
The materials related to technology are particularly critical to show, for example, the entirely speculative nature of plaintiffs' claims. Before plaintiffs' threatened doomsday occurs, the technology will have almost certainly moved past CSS/DeCSS. The reason the plaintiffs do not want to produce documents or witnesses may have little to do with this suit, but with the competitive nature of plaintiffs. We believe they do not want each other to know the facts, studies and reports that each other has.
Distinctions are of critical importance in evaluating the privilege claims in this case. The facts show that the MPAA attorney responsible for investigating anti-piracy perceived that a potential problem with DeCSS might exist, but did not understand the nature and scope of the threat, if any. (Declaration of Mark Litvack, 4). Without ever receiving any information or communication from the plaintiffs, Mr.Litvack independently conducted discussions within the MPAA anti piracy group and decided with Jacobsen to investigate DeCSS. The MPAA hired experts to investigate and report and conducted its own investigation. After reviewing the data, the MPAA took some actions on its own (such as causing hundreds of cease and desist letters to be sent out) and presented the plaintiffs with recommendations for other actions to be taken. (Id., 5-9). On such facts, nothing should be privileged because essentially all of the discussions and investigations the MPAA seeks to hide commenced before the plaintiffs themselves saw a problem and solicited legal advice, and were conducted by the MPAA without direction from plaintiffs. The fact that all such work was conceivably initiated and directed by the MPAA in contemplation of the need to be ready to respond to requests for legal advice, i.e., at best, in anticipation of privileged communications from the plaintiffs on the subject, would not suffice to render anything protectable, much less all of it. Thus, virtually, all of the documents demanded and discussions and actions inquired into during the Schumann and Jacobsen depositions, cannot, based on these admissions, be considered "privileged."
As the court observed in Dutton v. Bandler & Kass, 127 F.R.D. 46, 52 (S.D.N.Y. 1989), "discussions that anticipate a privileged communication are not themselves privileged. To hold otherwise would expand the attorney-client privilege without limit, since countless communications within an organization could be considered preparatory to seeking legal advice." The concern expressed in Dutton was echoed in First Chicago International v. United Exchange Co., Ltd., 125 F.R.D. 55 (S.D.N.Y. 1989):
Applying the privilege to corporations has proven problematic because corporations can only act through their agents. Moreover, extending the privilege to corporations risks creating an intolerably large zone of sanctuary since many corporations continuously consult attorneys. Any standard developed, therefore, must strike a balance between encouraging corporations to seek legal advice and preventing corporate attorneys from being used as shields to thwart discovery.
127 F.R.D. at 57.
Here, because there were no communications from Plaintiffs to the MPAA, the holdings of the cases set forth below apply with particular force. The courts have struck a balance in the case of attorney-client communications involving corporate clients by adopting a "but for" test, which requires the proponent of the claim of privilege to demonstrate that the communication would not have occurred but for the purpose of seeking legal advice. As the court noted in First Chicago:
A corollary to limiting the privilege to circumstances where protection furthers the policy behind it is that a communication between a corporation's employee and counsel should only be shielded if the communication would not have been made but for the client's need for legal advice or services. Id. at 492 ("to invoke the privilege, the claimant must demonstrate that the communication would not have been made but for the pursuit of legal services"). This requirement is analogous to the rule that "pre-existing" documents are not privileged.
127 F.R.D.at 57. See also ABB Kent-Taylor, Inc. v. Stallings and Co., Inc., 172 F.R.D. 53, 55 (W.D.N.Y. 1996) quoting United States. v. Davis, 131 F.R.D. 391, 401 (S.D.N.Y. 1990)("'The mere fact a communication is made directly to an attorney, or an attorney is copied in on a memorandum does not mean that the communication is necessarily privileged." . . .[T]here is no privilege for corporate counsel who is giving, or corporate employees who are seeking, predominantly business advice as opposed to legal advice."); United States v. Chevron Corp., C-94-1885(SBA), 1996 U.S. Dist. LEXIS 8646, 1996 WL 444597, at *2 (N.D. Cal. May 30, 1996)("The attorney-client privilege does not attach . . . to documents which were prepared for simultaneous review by both legal and nonlegal personnel within the corporation. . . . [T]hose communications cannot be said to have been made for the primary purpose of seeking legal advice."); North Carolina Elec. Membership Corp. v. Carolina Power & Light Co., 110 F.R.D. 511, 514 (M.D.N.C. 1986)("Corporate documents prepared for simultaneous review by legal and nonlegal personnel are often held to be not privileged because they are not shown to be communications made for the primary purpose of seeking legal advice."); Durham Indus., Inc. v. North River Ins. Co., No. 79 CIV 1705(RWS), 1980 U.S. Dist. LEXIS 15154, 1980 WL 112701, at *3 (S.D.N.Y. Nov. 21, 1980)("The test is whether the legal advice element predominates; even legal advice is unprivileged if it is incidental to business advice."); Ohio-Sealy Mattress Mfg. Co. v. Kaplan, 90 F.R.D. 21, 34 (N.D. Ill. 1980)("Although legal considerations are found in the documents, they are few in number and are not considered at length. . . . This suggests that [the attorney] was retained primarily for his expertise as a business consultant, with any legal advice he rendered to be considered as 'incidental'").
As the court noted in ABB Kent-Taylor, Inc., 172 F.R.D. at 55: "There is no bright-line test for distinguishing between business advice and legal advice, except to say the latter is protected from disclosure while the former is not. Resolving these often vexing issues is necessarily fact specific and the particular communication in dispute must be examined closely."
Governing Law
Since plaintiffs assert federal law claims in this case, federal law governs the nature of and standards for the privilege claims. Fed. R. Evid. 501 provides that "the privilege of a witness . . . shall be governed by the principles of the common law as they may be interpreted by the courts of the United States in light of reason and experience." See, e.g., von Bulow v. von Bulow, 811 F.2d 136, 141 (2d Cir.), cert. denied, 481 U.S. 1015 (1987). Federal common law therefore governs analyses of the applicability of the attorney-client privilege, and these analyses must be performed on a case-by-case basis. Upjohn Co. v. United States, 449 U.S. at 389-97; United States v. Montgomery, 1993 U.S. App. LEXIS 5832, 1993 WL 74314 (9th Cir. 1993), cert. denied, 509 U.S. 931 (1993); Matter of Bevill, Bresler & Schulman Asset Management Corp., 805 F.2d 120 (3d Cir. 1986); Polycast Technology Corp. v. Uniroyal, Inc., 125 F.R.D. 47, 48 (S.D.N.Y. 1989).
Federal law also governs the application of the work-product doctrine. Fed. R. Civ. P. (26)(b)(3); see, e.g., Bowne of New York City, Inc. v. AmBase Corp., 150 F.R.D. 465, 471 (S.D.N.Y. 1993); Railroad Salvage of Conn., Inc. v. Japan Freight Consolidators (U.S.A.) Inc., 97 F.R.D. 37, 40 (E.D.N.Y. 1983).
Plaintiffs' Burden
As the proponents of the claim of attorney-client privilege as well as work-product immunity, plaintiffs bear the burden of establishing the factual basis for their resistance to defendants' discovery efforts. See, e.g., United States v. Adlman, 68 F.3d 1495, 1500 (2d Cir. 1995); United States v. Schwimmer, 892 F.2d 237, 244 (2d Cir. 1989). This placement of the burden reflects the policy that the privilege be used sparingly, only when well identified and established. Case law has been explicit on that score as well:
We do not create and apply an evidentiary privilege unless it "promotes sufficiently important interests to outweigh the need for probative evidence. . . ." Inasmuch as "testimonial exclusionary rules and privileges contravene the fundamental principle that 'the public . . . has a right to every man's evidence,'" any such privilege must "be strictly construed."
University of Pennsylvania v. EEOC, 493 U.S. 182, 189 (1990) (citations omitted). See also In Re Horowitz, 482 F.2d 72, 81 (2d Cir. 1973), cert. denied, 414 U.S. 867 (1973)(citing Wigmore for proposition that attorney client privilege "ought to be strictly confined within the narrowest limits consistent with the logic of its principle"); Westinghouse Electric Corp. v. The Republic of the Philippines, 951 F.2d 1414, 1423 (3d Cir. 1991)(attorney client privilege construed "narrowly" because it obstructs truth-finding process); In re Grand Jury Investigation, 599 F.2d 1224, 1235 (3d Cir. 1979)(same).
Initially, plaintiffs must establish those facts that are the essential elements of the privileged relationship. von Bulow, 811 F.2d at 144. More broadly, plaintiffs must establish all elements of the privilege. See, e.g., In re Horowitz, 482 F.2d 72, 82 (2d Cir.), cert. denied, 414 U.S. 867 (1973); United States v. Kovel, 296 F.2d 918, 923 (2d Cir. 1961). This burden can be met only by an evidentiary showing based on competent evidence and cannot be "discharged by mere conclusory or ipse dixit assertions." von Bulow, 811 F.2d at 144, 146 (quoting In re Bonanno, 344 F.2d 830, 833 (2d Cir. 1965); Nat. Educ. Training Group, Inc. v. Skillsoft Corp., 1999 U.S. Dist. LEXIS 8680, 1999 WL 378337, at *2 (S.D.N.Y. June 10, 1999).
Requirement of a Privilege Log
At a minimum, a party asserting a claim of privilege is obligated to prepare an index of withheld documents, which must provide sufficient information "to assess the applicability of the privilege or protection." Fed. R. Civ. P. 26(b)(5). Thus, a party challenging an assertion of privilege is given the information necessary to state the grounds of its challenge and is not left to guess at the nature of what's being withheld and why.
As noted in Marsh v. Safir, 99 Civ. 8605 (JGK)(MHD), 2000 U.S. Dist. LEXIS 5136 (S.D.N.Y. Apr. 20, 2000), a party asserting a blanket claim of attorney-client privilege as to oral communications should "proffer affidavits that are detailed enough to demonstrate that there are no segregable non-privileged portions of oral communications that they are withholding." Id. at *42. The court observed that if a party asserting privilege does not furnish such information, "they would have effectively done away with a crucial portion of the proof burden that any party invoking the privilege must ordinarily bear." Id.
In the case of documents, the privilege log should "(1) identify each document and its author, (2) identify the date the document was created, (3) identify the purpose for which the document was made and why such document should be considered primarily legal advice, (4) identify the name and position of all the named recipients of the document, (5) identify the name and positions of any other individuals who received the document, and (6) contain a specific and detailed explanation of why the particular document is claimed to be privileged." ABB Kent-Taylor, 172 F.R.D. at 58, citing Cuno, Inc. v. Pall Corp., 121 F.R.D. 198, 200 (E.D.N.Y. 1988) (requiring detailed privilege information in connection with in camera inspection).
Where a party claiming privilege fails to supply such information, the court and opposing counsel have no means of evaluating the claim. In such circumstances, the court must either require a supplemental submissions, or deny the claim. As the Second Circuit noted in United States v. Construction Products Research, Inc., 73 F3d 464, 473-74 (2d Cir.), cert. denied, 519 U.S. 927 (1996), quoting Bowne, 150 F.R.D. at 474, "if the party invoking the privilege does not provide sufficient detail to demonstrate fulfillment of all the legal requirements for application of the privilege, his claim will be rejected." Here, with respect to six plaintiffs, there is neither testimony of any kind, and with respect to five plaintiffs, no documents of any kind. Nothing fundamental has happened in the last week. The potential "agreement" submitted to the Court has been ignored by the plaintiffs.
In Camera Review
Federal courts, including the Supreme Court, have long recognized the appropriateness and value of in camera review of materials that disclose to the court the substance of assertedly privileged information, even of the most sensitive nature. See, e.g., United States v. Zolin, 491 U.S. 554, 567-68 (1989); Kerr v. U.S. District Court, 426 U.S. 394, 405 (1976)(governmental privilege); United States v. Nixon, 418 U.S. 683, 706 (1974)(presidential communications); Gerald B. Lefcourt, P.C. v. United States, 125 F.3d 79, 88 (2d Cir. 1997); In re John Doe, Inc., 13 F.3d 633, 636 (2d Cir. 1994); In re Grand Jury Subpoena Duces Tecum, 731 F.2d 1032, 1038 (2d Cir. 1984). See also United States v. Fields, 113 F.3d 313, 324 (2d Cir. 1997)(in camera interview with confidential informant).
Assuming the Court is fully familiar with the issues and defendants' claims, there is no cogent rationale for precluding that approach, in appropriate circumstances, in cases involving oral communications. Marsh v. Safir, 2000 U.S. Dist. LEXIS 5136, at *43. Courts have conducted in camera review of such communications, either by affidavit or by oral testimony, whenever such a procedure is deemed to be helpful to an assessment of a party's privilege claim. See, e.g., In re John Doe, Inc., 13 F.3d 633, 635 (2d Cir. 1994)(in camera testimony by attorney regarding discussions with client was appropriate to determine whether crime-fraud exception to attorney-client privilege applied). See also In re Doe, 964 F.2d 1325, 1329 (2d Cir. 1992) (approving in camera disclosures of appellant's dealings with psychotherapists).
Attorney-Client Communications
The standards applicable to a claim of attorney-client privilege in a federal question case are well settled:
To invoke the attorney-client privilege, a party must demonstrate that there was: (1) a communication between client and counsel, which (2) was intended to be and was in fact kept confidential, and (3) made for the purpose of obtaining or providing legal advice.
United States v. Construction Prods. Research, Inc., 73 F.3d 464, 473 (2d Cir. 1995), cert. denied, 519 U.S. 927 (1996). Each of the following facts must be established: "(1) the asserted holder of the privilege is or sought to become a client; (2) the person to whom the communication was made (a) is a member of the bar of a court, or his subordinate and (b) in connection with this communication is acting as a lawyer, (3) the communication relates to a fact of which the attorney was informed (a) by his client (b) without the presence of others (c) for the purpose of securing primarily either (i) an opinion on law or (ii) legal services . . . and not (d) for the purpose of committing a crime or tort; and (4) the privilege has . . . not been waived." United States v. United Shoe Machinery Corp., 89 F. Supp. 357, 358 (D.Mass. 1950).
Much of the information we seek from plaintiffs cannot conceivably be "privileged." Is the DeCSS fear real or manufactured? The recently produced Valenti press release stating that DeCSS is no threat strongly suggests the latter. Is discovery being suppressed because competing plaintiffs fear making available to the other plaintiffs information they do not want their competition to know? What is the state of the relevant technology? Was DVD audio delayed because of DeCSS as plaintiffs claim or for some other reason? Is DeCSS being blamed for unrelated incidences of piracy?
The privilege does not extend to communications made exclusively or predominantly for purposes other than obtaining the legal services of an attorney. See, e.g., In re Grand Jury Subpoena Duces Tecum, 731 F.2d 1032, 1037 (2d Cir. 1984); In re John Doe Corp., 675 F.2d 482, 488 (2d Cir. 1982); Stratagem Dev. Corp. v. Heron Int'l N.V., 153 F.R.D. 535, 542 (S.D.N.Y. 1994). See also United States v. Chevron Corp., 1996 U.S. Dist. LEXIS 8646, No. C-94-1885(SBA), 1996 WL 444597, at *2 (N.D. Cal. May 30, 1996)("The attorney-client privilege does not attach . . . to documents which were prepared for simultaneous review by both legal and nonlegal personnel within the corporation. This rule applies to the document as a whole because each communication within that document was provided to nonlegal personnel for their review. Thus, those communications cannot be said to have been made for the primary purpose of seeking legal advice.")(citation omitted).
As shown above and in Plaintiffs' declarations, no Plaintiff communication was made to MPAA. Rather, the MPAA discovered DeCSS and conducted the investigations into it and essentially commenced and is directing this litigation. See Litvack Decl., 5-9. Plaintiffs were apprised of MPAA's actions and recommendations, but, based on plaintiffs' submissions in this motion, never communicated any confidential information to the MPAA related to this case.
Attorney Work-Product Doctrine
The scope of the work-product doctrine is defined in Fed. R. Civ. P. 26(b)(3), which provides, in pertinent part, that:
a party may obtain discovery of documents and tangible things . . . prepared in anticipation of litigation or for trial by or for another party or by or for that other party's representative (including the other party's attorney, consultant, surety, indemnitor, insurer, or agent) only upon a showing that the party seeking discovery has substantial need of the materials in the preparation of the party's case and that the party is unable without undue hardship to obtain the substantial equivalent of the materials by other means. In ordering discovery of such materials when the required showing has been made, the court shall protect against disclosure of the mental impressions, conclusions, opinions, or legal theories of an attorney or other representative of a party concerning the litigation.
Rule 26(b)(3) thus establishes a qualified immunity from discovery for documents "prepared in anticipation of litigation or for trial" by the party or its attorney or by an agent of the party or attorney. As recently interpreted by the Second Circuit, this wording covers documents prepared "because of" litigation or the prospect of litigation. See United States v. Adlman, 134 F.3d 1194, 1202-03 (2d Cir. 1998). The applicable test is whether "'in light of the nature of the document and the factual situation in the particular case, the document can fairly be said to have been prepared or obtained because of the prospect of litigation.'" Id. at 1202, quoting 8 Charles Alan Wright, et al., Federal Practice & Procedure 2024 at 343 (2d ed. 1994). While documents prepared for both litigation and business purposes generally enjoy work-product protection, "documents that are prepared in the ordinary course of business or that would have been created in essentially similar form irrespective of the litigation" are not protected. Adlman, 134 F.3d at 1202.
As the Second Circuit emphasized in Adlman:
[T]he "because of " formulation that we adopt here withholds protection from documents that are prepared in the ordinary course of business or that would have been created in essentially similar form irrespective of the litigation. It is well established that work-product privilege does not apply to such documents. See Fed. R. Civ. P. 26(b)(3), Advisory Committee's note ("Materials assembled in the ordinary course of business . . . are not under the qualified immunity provided by this subdivision."); see, e.g., National Union Wire, 967 F.2d at 984. Even if such documents might also help in preparation for litigation, they do not qualify for protection because it could not fairly be said that they were created "because of" actual or impending litigation. See Wright & Miller 2024, at 346 ("even though litigation is already in prospect, there is no work-product immunity for documents prepared in the regular course of business rather than for purposes of the litigation").
Furthermore, although a finding under this test that a document is prepared because of the prospect of litigation warrants application of Rule 26(b)(3), this does not necessarily mean that the document will be protected against discovery. Rather, it means that a document is eligible for work-product privilege. The district court can then assess whether the party seeking discovery has made an adequate showing of substantial need for the document and an inability to obtain its contents elsewhere without undue hardship. The district court can order production of the portions of the document for which a litigant has made an adequate showing. The court can focus its attention on whether the document or any portion is the type of material that should be disclosed, while retaining the authority to protect against disclosure of the mental impressions, strategies, and analyses of the party or its representative concerning the litigation.
In short, we find that the Wright & Miller "because of" test appropriately focuses on both what should be eligible for the Rule's protection and what should not. We believe this is the proper test to determine whether a document was prepared "in anticipation of litigation" and is thus eligible for protection depending on the further findings required by the Rule.
134 F.3d at 1202-03.
The protection of the work-product rule is therefore only conditional. Moreover, even if otherwise applicable, the privilege may be overcome if the discovering party demonstrates that he "has [a] substantial need of the materials in the preparation of [his] case and that [he] is unable without undue hardship to obtain the substantial equivalent of the materials by other means." Fed. R. Civ. P. 26(b)(3). See, e.g., Horn & Hardart Co. v. Pillsbury Co., 888 F.2d 8, 12 (2d Cir. 1989).
A party asserting work-product protection must prove three elements: "the material must (1) be a document or tangible thing, (2) that was prepared in anticipation of litigation, and (3) was prepared by or for a party, or by or for his representative." In Re Grand Jury Subpoenas dated December 18, 1981 & January 4, 1982, 561 F. Supp. 1247, 1257 (E.D.N.Y. 1982) (McLaughlin, J.). Accord Weinhold v. Witte Heavy Lift, Inc., 1994 U.S. Dist. LEXIS 4559, *5, 90 Civ. 2096 (PKL), 1994 WL 132392 at *2 (S.D.N.Y. Apr. 11, 1994); 2 Michael C. Silberberg, Civil Practice in the Southern District of New York, 15.04 at 15-11 (2d ed. 1998). Plaintiffs cannot show any of these elements because they have failed to provide Defendants or the Court with the required information about allegedly privileged materials.
If the proponent succeeds in establishing these elements (which plaintiffs have not), the burden then shifts to the parties seeking discovery of work-product material to show substantial need for the material and an inability to obtain its substantial equivalent from another source without undue hardship. A substantial need for work product materials exists where the information sought is "essential" to the party's defense, is "crucial" to the determination of whether the defendant could be held liable for the acts alleged, or carries great probative value on contested issues. See, e.g., Cornelius v. Consolidated Rail Corp., 169 F.R.D. 250, 254 (N.D.N.Y. 1996); Granite Partners, L.P. v. Bear, Stearns & Co., Inc., 184 F.R.D. 49, 55-56 (S.D.N.Y. 1999); Brownell v. Roadway Package Sys., Inc., 185 F.R.D. 19, 26 (N.D.N.Y. 1999). However, "while factual materials falling within the scope of the doctrine may generally be discovered upon this showing of 'substantial need', attorney mental impressions are more rigorously protected from discovery." In re Leslie Fay Cos. Inc. Sec. Litig., 161 F.R.D. 274, 279 (S.D.N.Y. 1995).
The MPAA should be treated like an insurance company whose business is to investigate and evaluate claims and to defend its insureds against third-party claims. Insurance Co. of N. Am. v. M/V Savannah, , 94 Civ. 8846 (CSH), 1995 U.S. Dist. LEXIS 15247, *31995 WL 608295, at *1 (S.D.N.Y. Oct. 17, 1995); Harper v. Auto-Owners Ins. Co., 138 F.R.D. 655, 662 (S.D. Ind. 1991); Fine v. Bellefonte Underwriters Ins. Co., 91 F.R.D. 420, 422 (S.D.N.Y. 1981). Many courts have refused to grant work-product protection to investigative reports prepared as part of the routine process of adjusting a claim made by the insured. See Harper v. Auto-Owners Ins. Co., 138 F.R.D. at 662 (citing cases); 6 Edward J. Brunet et al., Moore's Federal Practice 26.70[3][c] at 26-213 (3d ed. 1998).
For example, an independent marine surveyor's report prepared for an insurance company has been held to be discoverable, with the court noting that an insurer is "simply doing business as usual," where it retains a surveyor to "assist [it] in doing these or related functions, . . . and the documents generated thereby are not protected from discovery." Insurance Co. of N. Am. v. M/V Savannah, 1995 U.S. Dist. LEXIS 15247, at *3, 1995 WL 608295 at *1. "Were the rule otherwise, . . . documents prepared by or at the request of an insurance company during the insurance company's ordinary business of claim handling would shield from discovery all documents falling within that category by a ritualistic incantation of 'anticipation of litigation.'" 1995 U.S. Dist. LEXIS 15247, at *3. See also Janicker v. George Washington Univ., 94 F.R.D. 648, 650 (D.D.C. 1982)("The fact that a defendant anticipates the contingency of litigation resulting from an accident or event does not automatically qualify an 'in house' report as work product . . . . A more or less routine investigation of a possibly resistible claim is not sufficient to immunize an investigative report developed in the ordinary course of business"); Westhemeco, Ltd. v. New Hampshire Ins. Co., 82 F.R.D. 702, 708-09 (S.D.N.Y. 1979)(report prepared by an investigator and surveyor retained by insurer's attorneys was prepared in the ordinary course of business, not in anticipation of litigation, and consequently was not entitled to work-product protection.).
Because it is difficult to determine precisely when the possibility of litigation becomes sufficiently definite to be considered "anticipated," courts frequently presume that investigative reports prepared by or for an insurer prior to a coverage decision are prepared in the ordinary course of the insurer's business and are not afforded work-product protection. The Schumann interim and final reports, the documents provided him by the MPAA on which the reports are based, and the MPAA's investigations of DeCSS and websites posting the utility are exactly these kinds of materials. See, e.g., Amoco Oil Co. v. Hartford Accident & Indem. Co., 1995 U.S. Dist. LEXIS 13532, 93 Civ. 7295 (SS), at *2, 1995 WL 555696, at *1 (S.D.N.Y. Sept. 18, 1995); SEC v. Thrasher, 92 Civ. 6987 (JFK), 1995 U.S. Dist. LEXIS 1355, at *12-13, 1995 WL 46681, at *16 n.3 (S.D.N.Y. Feb. 7, 1995); Arkwright Mut. Ins. Co. v. National Union Fire Ins. Co., 90 Civ. 7811 (AGS), 1994 U.S. Dist. LEXIS 17768, 1994 WL 698298, at *2 (S.D.N.Y. Dec. 13, 1994); Bank Hapoalim, B.M. v. American Home Assurance Co., 1994 U.S. Dist. LEXIS 4091, 92 Civ. 3561 (KMW), 1994 WL 119575, at *8-9 (S.D.N.Y. April 6, 1994);
Joint Defense or Common Interest Privilege
The joint defense privilege, which is derived from the common interest rule, is "merely an extension of the attorney-client privilege and the work-product doctrine" and "confers no independent privileged status to documents or information." Metro Wastewater Reclamation v. Continental Casualty Co., 142 F.R.D. 471, 478 (D.Colo. 1992); In re Grand Jury Subpoenas, 89-3 and 89-4, 902 F.2d 244, 249 (4th Cir. 1990)(joint defense presupposes existence of otherwise valid privilege); United States v. Schwimmer, 892 F.2d at 243.
In Schwimmer, the Second Circuit analyzed the joint defense privilege, stating:
[The joint defense privilege] serves to protect the confidentiality of communications passing from one party to the attorney for another party where a joint defense effort or strategy has been decided upon and undertaken by the parties and their respective counsel. Only those communications made in the course of an ongoing common enterprise and intended to further the enterprise are protected. "The need to protect the free flow of information from client to attorney logically exists whenever multiple clients share a common interest about a legal matter," and it is therefore unnecessary that there be actual litigation in progress for the common interest rule of the attorney-client privilege to apply.
892 F.2d at 243-44 (citations and internal quotations omitted).
Courts have varied in their assessments of the ingredients necessary to create a joint defense privilege. In no cases have we found are the patterns as clear as in this case. We believe it to be an affront to this Court. Most courts have read the joint defense exception to attorney client privilege rules narrowly, refusing to find a joint defense privilege unless the parties demonstrate that they were involved in an ongoing common enterprise or had agreed to a common defense strategy. E.g., Matter of Bevill, Bresler & Schulman Asset Management Corp., 805 F.2d 120 (3d Cir. 1986)("the joint defense privilege protects communications . . . when the communications are 'part of an on-going and joint effort to set up a common defense strategy'"). Plaintiffs have provided only the most rudimentary and conclusory allegations of such agreements with respect to the DVD CCA.
Numerous district courts apply the privilege very narrowly and require substantial showings by parties claiming joint defense protection. For example, an Illinois district court noted that "the privilege arises out of the need for a common defense, as opposed merely to a common problem." Medcom Holding Co. v. Baxter Travenol Laboratories, 689 F. Supp. 841, 845 (N.D.Ill. 1988). A Colorado district court relied on this holding to rule that the joint defense privilege covers only those materials provided "for the purpose of mounting a common defense . . . ." Metro Wastewater Reclamation v. Continental Casualty Co., 142 F.R.D. 471, 479 (D.Colo. 1992). The Metro court further noted that "the joint defense privilege arises only where the common interest of the parties relates to the joint defense of existing or impending litigation." Id. at 479, n.7. Similarly, a Massachusetts district court has gone so far as to require that a party can claim a joint defense privilege only when it can prove that it "agreed to pursue a joint defense" with another party. United States v. Sawyer, 878 F. Supp. 295, 297 (D.Mass. 1995). The Sawyer court noted that "one party's mistaken belief about the existence of a joint defense does not, and cannot, give rise to a joint defense privilege." Id. at 297, n.7.
This background helps to explain the Second Circuit's position, as declared in Schwimmer, that "only those communications made in the course of an ongoing common enterprise and intended to further the enterprise are protected." Id. The Schwimmer court was unwilling to infer a joint defense agreement from the simple circumstance of a general purpose meeting held to discuss matters of common interest, which is exactly the invitation and rationale offered by the plaintiffs for a grant of blanket immunity here.
The Schwimmer court additionally noted that, as with all claims of privilege arising out of the attorney-client relationship, a showing must be made that "the communication in question was given in confidence and that the client reasonably understood it to be so given." But that is only the first step in the analysis, not the "be all and end all" as plaintiffs seem to suggest by their vague declarations and complete failure to provide any information regarding the withheld communications and documents. As the court noted in United States v. Weissman, 94 Cr. 760 (CSH), 1996 U.S. Dist. LEXIS 19066, at *27 (S.D.N.Y. Apr. 3, 1996), a party's "objectively reasonable belief is not the determinative factor, but only the third of the three requisite elements of a joint defense agreement recited in Schwimmer."
District courts have applied Schwimmer rigorously. In Bairnco, the defendant corporation claimed a joint defense privilege over certain documents. 148 F.R.D. at 91. It was one of thirty-five companies that had entered into an agreement to form two non-profit corporations, known as ACF and CCR, "to act as . . . claims handling facilities for asbestos-related personal injury claims against each member." Id. at 95, n.1. ACF and CCR were responsible for, among other functions, settling cases for the member companies. Id. at 101-02. Defendant argued that a joint defense privilege protected documents containing communications from ACF and CCR to it because "one benefit of the agreement was the joint representation and defense of member companies." Id. at 102.
The documents at issue in Bairnco contained "statistics summarizing the status of asbestos claims processing and litigation, charts classifying the nature of claims by various categories, lists detailing the disposition of outstanding claims, related costs and the filing of new claims, and other similar data." Id. Relying on Schwimmer, the court held that these documents "cannot be characterized as communications pertaining to defense strategy, or designed to further a common defense in any particular litigation or claim for that matter." Id.
This demanding interpretation of the joint defense privilege was reiterated by the court in Bank Brussels Lambert v. Credit Lyonnais (Suisse) S.A., 160 F.R.D. 437, 447 (S.D.N.Y. 1995), which held that the joint defense privilege protects only those who "have demonstrated cooperation in formulating a common legal strategy." See also Bass Public Ltd. Co. v. Promus Companies Inc., 868 F. Supp. 615, 621 (S.D.N.Y. 1994)("The joint defense privilege only applies . . . to communications between actual or potential co-defendants and their attorney [sic] for any common defense purpose."); Polycast Technology Corp. v. Uniroyal, Inc., 125 F.R.D. 47, 50 (S.D.N.Y. 1989)(actual or potential litigation is "necessary prerequisite for application of the joint defense privilege.").
Accordingly, not only is there no privilege cloaking communications and/or documents distributed between or among plaintiffs, the MPAA and the DVD CCA, but the DVD CCA's presence at any meeting with either plaintiffs or the MPAA, or the DVD CCA's receipt of any allegedly privileged materials, acts to destroy any assertion of privilege plaintiffs may assert in connection with such discussions and/or documents.
II
ASSUMING ARGUENDO THAT THE WORK-PRODUCT PRIVILEGE APPLIES
TO CERTAIN DOCUMENTS, DEFENDANTS HAVE SUFFICIENTLY
DEMONSTRATED A SUBSTANTIAL NEED TO WARRANT PRODUCTION
As noted above, even if plaintiffs demonstrate that certain documents are entitled to protection under the work-product doctrine, the court may nonetheless order the production of such documents where defendants can show a substantial need arising from an ability to obtain the same information from other sources. The material sought by defendants goes to the crux of the case that defendants hope to present, as shown in the affidavits submitted on the present motion before this Court. That suffices to warrant production. See Bairnco, 148 F.R.D. at at 103; Marsh v. Safir, 2000 U.S. Dist. LEXIS 5136, at *49 (holding that where withheld documents were crucial to proof of the decision-makers' motivation and rationale, and was one of the central issues in the case, the work-product protection could not stand).
Here, defendants have demonstrated that the DeCSS poses no real threat of piracy, that plaintiffs knew it, and that plaintiffs nonetheless commenced an action in equity seeking injunctive relief, with unclean hands. Given the total absence of any harm to Plaintiffs, it is clear that this litigation is little more than a press release in the form of a lawsuit. The Court was misled on the application for a preliminary injunction. The information sought is exclusively in the possession of plaintiffs and goes to the very heart of defendants' case.
III
PLAINTIFFS HAVE WAIVED ANY PRIVILEGES THAT MIGHT OTHERWISE
BE APPLICABLE BY PLACING THE MATTERS "AT ISSUE"
As noted recently in Granite Partners, L.P. v. Bear, Stearns, & Co., Inc., 184 F.R.D. 49, 54-55 (S.D.N.Y. 1999), there are numerous ways in which a party may waive the attorney-client and work-product privileges. The most obvious way, applicable to the facts of this case, is an "at issue" or implicit waiver. Additionally, if a privileged document is used offensively, the privilege may be waived. Schumann and Jacobsen testified as to investigations and results thereof, but refused to produce any documents related thereto. Furthermore, waiver may be invoked where "a litigant makes selective use of privileged materials, for example, by releasing only those portions of the material that are favorable to his position, while withholding unfavorable portions." Tribune Co. v. Purcigliotti, 93 Civ. 7222, 1997 U.S. Dist. LEXIS 228, 1997 WL 10924, at *5 (S.D.N.Y. Jan. 10, 1997). See also United States v. Nobles, 422 U.S. 225, 239-40 (1975).
Courts have recognized that the work product privilege is waived when a party places otherwise protected work product "at issue." In Bowne, defendant AmBase asserted counterclaims against plaintiff Bowne regarding the cause for delay in the mailing of a proxy statement. 150 F.R.D. at 469. The court found that counsel for AmBase possessed documents that shed light on the issue of knowledge as to which party was at fault for the "missed mailing." Id. at 487. The court ordered production of documents on which AmBase claimed work product protection because those documents were placed "at issue." Id. at 488. The court concluded it could be found that AmBase waived its work product privilege because "invasion of the privilege [was] required to determine the validity of [AmBase's] claim . . . ." Id. at 488 (internal quotations omitted); see, e.g., Coleco Indus., Inc. v. Universal City Studios, Inc., 110 F.R.D. 688, 689-91 (S.D.N.Y. 1986)(holding that defendant that raised reliance upon advice of counsel as a defense in suit concerning trademark and copyright ownership rights placed documents containing legal theories, opinions, and conclusions prepared by counsel at issue, thus waiving the work product privilege).
A privilege may be impliedly waived where a party makes assertions in the litigation or "asserts a claim that in fairness requires examination of protected communications." United States v. Bilzerian, 926 F.2d 1285, 1292 (2d Cir. 1991). Waiver typically occurs when the party asserting the privilege placed a protected document in issue through some affirmative act intended to insure to that party's benefit or where the party makes selective use of the privileged materials. See generally Tribune, 1997 WL 10924, at *5-*6. In this Circuit, the factors often applied to determine whether there has been an implied or "at issue" waiver are set out in Hearn v. Rhay, 68 F.R.D. 574 (E.D. Wash. 1975), and are as follows:
(1) assertion of the privilege was the result of some affirmative act, such as filing suit, by the asserting party; (2) through this affirmative act, the asserting party put the protected information at issue by making it relevant to the case; and (3) application of the privilege would have denied the opposing party access to information vital to his defense. Thus, there were three conditions exist, a court should find that the party asserting a privilege waived it through his own affirmative conduct.
Id. at 581, cited with approval in Bilzerian, 926 F.2d at 1292; see Kidder Peabody, 168 F.R.D. at 470; Bowne, 150 F.R.D. at 488-89; see also Tribune, 1997 WL 10924, at *6 (rejecting plaintiffs' contention that the "at issue" waiver doctrine only applies to attorney-client privilege, and not to work product and proclaiming that "this distinction [is not] meaningful").
Based upon both plaintiffs' and the MPAA's conduct, as demonstrated above, it is clear they have put at issue the very matters they now seek to conceal by invoking the attorney-client privilege and the attorney-work product doctrine.
CONCLUSION
Plaintiffs' motion for a protective order should be summarily denied on the basis of a failure of proof and/or because of the applicability of the "at issue" waiver doctrine. Accordingly, plaintiffs should be ordered to produce all documents in their possession that are responsive to defendants' discovery requests and produce its witnesses for further examination. The court should order the MPAA and all the plaintiffs to provide a detailed privilege log as to all meetings, oral communications and documents as to which the privilege is claimed, with a view toward holding an in camera evidentiary hearing.
Dated: New York, New York
June 19, 2000
FRANKFURT, GARBUS, KLEIN & SELZ, P.C.
BY____________________________________
Martin Garbus (MG 6261)
Edward Hernstadt (EH 4750)
488 Madison Avenue
New York, New York 10022
(212) 826-5526
Attorneys for DefendantsMartin Garbus, Esq. (MG 6261)
Edward Hernstadt, Esq. (EH 9569)
FRANKFURT, GARBUS, KLEIN & SELZ, P.C.
488 Madison Avenue
New York, New York 10022
(212) 826-5582
Attorneys for Defendants Eric Corley a/k/a
Emmanuel Goldstein and 2600 Enterprises, Inc.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
X
UNIVERSAL CITY STUDIOS, INC., PARAMOUNT PICTURES CORPORATION,. METRO-GOLDWYN-MAYER STUDIOS INC., TRISTAR PICTURES, INC., COLUMBIA PICTURES INDUSTRIES, INC., TIME WARNER ENTERTAINMENT CO., L.P., DISNEY ENTERPRISES, INC., and TWENTIETH CENTURY FOX FILM CORPORATION,
Plaintiffs,
- against -
ERIC CORLEY a/k/a "EMMANUEL GOLDSTEIN"
and 2600 ENTERPRISES, INC.,
Defendants.
00 Civ. 0277 (LAK)(RLE)
X
DEFENDANTS' MEMORANDUM OF LAW IN OPPOSITION
TO PLAINTIFFS' MOTION FOR A PROTECTIVE
ORDER, WHICH SEEKS A GRANT OF BLANKET IMMUNITY
FROM GIVING TESTIMONY AND PRODUCING DOCUMENTS ON
GROUNDS OF ATTORNEY-CLIENT AND WORK PRODUCT PRIVILEGES
Table of Contents
Page
Preliminary Statement 1
ARGUMENT 8
I PLAINTIFFS HAVE FAILED TO MEET
THEIR BURDEN OF PROOF AND THEIR
MOTION SHOULD BE SUMMARILY DENIED 8
Overview of the Applicable Law 8
Governing Law 15
Plaintiffs' Burden 16
Requirement of a Privilege Log 17
In Camera Review 18
Attorney-Client Communications 19
Attorney Work-Product Doctrine 21
Joint Defense or Common Interest Privilege 25
II ASSUMING ARGUENDO THAT THE WORK-PRODUCT PRIVILEGE APPLIES TO CERTAIN DOCUMENTS, DEFENDANTS HAVE SUFFICIENTLY DEMONSTRATED A SUBSTANTIAL NEED TO
WARRANT PRODUCTION 29
III PLAINTIFFS HAVE WAIVED ANY PRIVILEGES THAT MIGHT OTHERWISE BE APPLICABLE BY PLACING THE MATTERS
"AT ISSUE" 30
CONCLUSION 32
Table of Authorities
CASES
ABB Kent-Taylor, Inc. v. Stallings and Co., Inc., 172 F.R.D.53 (W.D.N.Y. 1996) 14, 15, 17
Amoco Oil Co. v. Hartford Accident & Indem. Co., 93 Civ. 7295 (SS),
1995 U.S. Dist. LEXIS 13532 (S.D.N.Y. Sept. 18, 1995) 25
Arkwright Mut. Ins. Co. v. National Union Fire Ins. Co., 90 Civ. 7811 (AGS), 1994 U.S. Dist. LEXIS 17768 (S.D.N.Y. Dec. 13, 1994) 25
Bank Brussels Lambert v. Credit Lyonnais (Suisse) S.A., 160 F.R.D. 437 (S.D.N.Y. 1995) 28
Bank Hapoalim, B.M. v. American Home Assurance Co., 92 Civ. 3561 (KMW), 1994 U.S. Dist. LEXIS 4091 (S.D.N.Y. April 6, 1994) 25
Bass Public Ltd. Co. v. Promus Companies Inc., 868 F. Supp. 615 (S.D.N.Y. 1994) 29
Bowne of New York City, Inc. v. AmBase Corp., 150 F.R.D. 465 (S.D.N.Y. 1993) 15, 18, 30
Brownell v. Roadway Package Sys., Inc., 185 F.R.D. 19 (N.D.N.Y. 1999) 23
Coleco Indus., Inc. v. Universal City Studios, Inc., 110 F.R.D. 688 (S.D.N.Y. 1986) 31
Cornelius v. Consolidated Rail Corp., 169 F.R.D. 250 (N.D.N.Y. 1996) 23
Cuno, Inc. v. Pall Corp., 121 F.R.D. 198 (E.D.N.Y. 1988) 17
Daval Steel Products v. M/V Fakredine, 951 F.2d 1357 (2d Cir. 1991) 9
Durham Indus., Inc. v. North River Ins. Co., No. 79 CIV 1705(RWS), 1980 U.S. Dist. LEXIS 15154 (S.D.N.Y. Nov. 21, 1980) 14
Dutton v. Bandler & Kass, 127 F.R.D. 46 (S.D.N.Y. 1989) 13
Fine v. Bellefonte Underwriters Ins. Co., 91 F.R.D. 420 (S.D.N.Y. 1981) 24
First Chicago International v. United Exchange Co., Ltd., 125 F.R.D. 55 (S.D.N.Y. 1989) 13,
14
Gerald B. Lefcourt, P.C. v. United States, 125 F.3d 79 (2d Cir. 1997) 18
Granite Partners, L.P. v. Bear, Stearns & Co., Inc., 184 F.R.D. 49 (S.D.N.Y. 1999) 23, 30
Harper v. Auto-Owners Ins. Co., 138 F.R.D. 655 (S.D. Ind. 1991) 24
Hearn v. Rhay, 68 F.R.D. 574 (E.D. Wash. 1975) 31
Horn & Hardart Co. v. Pillsbury Co., 888 F.2d 8 (2d Cir. 1989) 23
In re Bairnco Corporation Securities Litigation, 148 F.R.D. 91 (S.D.N.Y. 1993) 9, 10, 28, 29
In re Bonanno, 344 F.2d 830 (2d Cir. 1965) 16
In re Doe, 964 F.2d 1325 (2d Cir. 1992) 19
In re Grand Jury Investigation, 599 F.2d 1224 (3d Cir. 1979) 16
In re Grand Jury Subpoena Duces Tecum, 731 F.2d 1032 (2d Cir. 1984) 18, 20
In Re Grand Jury Subpoenas dated December 18, 1981 & January 4, 1982,
561 F. Supp. 1247 (E.D.N.Y. 1982) 23
In re Grand Jury Subpoenas, 89-3 and 89-4, 902 F.2d 244 (4th Cir. 1990) 25
In Re Horowitz, 482 F.2d 72 (2d Cir. 1973), cert. denied, 414 U.S. 867 (1973) 16
In re John Doe Corp., 675 F.2d 482 (2d Cir. 1982) 18, 20
In re Leslie Fay Cos. Inc. Sec. Litig., 161 F.R.D. 274 (S.D.N.Y. 1995). 24
Insurance Co. of N. Am. v. M/V Savannah, 94 Civ. 8846 (CSH), 1995 U.S. Dist. LEXIS 15247 (S.D.N.Y. Oct. 17, 1995) 24
Janicker v. George Washington Univ., 94 F.R.D. 648 (D.D.C. 1982) 24
Kerr v. U.S. District Court, 426 U.S. 394 (1976) 18
Kidder Peabody, 168 F.R.D. at 470 32
Marsh v. Safir, 99 Civ. 8605 (JFK) (MHD) 2000 U.S. Dist. LEXIS 5136
(S.D.N.Y. Apr. 20, 2000) 17, 19, 29
Martin v. Valley Nat. Bank of Arizona, 140 F.R.D. 291 (S.D.N.Y. 1991) 9
Matter of Bevill, Bresler & Schulman Asset Management Corp., 805 F.2d 120 (3d Cir. 1986)
15, 26
Medcom Holding Co. v. Baxter Travenol Laboratories, 689 F. Supp. 841 (N.D.Ill. 1988) 26
Metro Wastewater Reclamation v. Continental Casualty Co.,
142 F.R.D. 471 (D.Colo. 1992) 25, 27
Morrissey v. City of New York, 171 F.R.D. 85 (S.D.N.Y. 1997) 8
Morse/Diesel, Inc. v. Fidelity & Deposit Co., 122 F.R.D. 447 (S.D.N.Y. 1988) 9
Nat. Educ. Training Group, Inc. v. Skillsoft Corp., 1999 U.S. Dist. LEXIS 8680 (S.D.N.Y. June 10, 1999) 17
National Congress For Puerto Rican Rights v. City of New York, 99 Civ. 1695 (SAS),
2000 U.S. Dist. LEXIS 6083 (May 8, 2000) 8
North Carolina Elec. Membership Corp. v. Carolina Power & Light Co., 110 F.R.D. 511 (M.D.N.C. 1986) 14
Ohio-Sealy Mattress Mfg. Co. v. Kaplan, 90 F.R.D. 21 (N.D. Ill. 1980) 14
Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340 (1978) 9
Polycast Technology Corp. v. Uniroyal, Inc., 125 F.R.D. 47 (S.D.N.Y. 1989) 15, 29
Railroad Salvage of Conn., Inc. v. Japan Freight Consolidators (U.S.A.) Inc.,
97 F.R.D. 37 (E.D.N.Y. 1983) 15
SEC v. Thrasher, 92 Civ. 6987 (JFK), 1995 U.S. Dist. LEXIS 1355 (S.D.N.Y. Feb. 7, 1995) 25
Stratagem Dev. Corp. v. Heron Int'l N.V., 153 F.R.D. 535 (S.D.N.Y. 1994) 20
Tribune Co. v. Purcigliotti, 93 Civ. 7222, 1997 U.S. Dist. LEXIS 228
(S.D.N.Y. Jan. 10, 1997) 30-32
United States Postal Serv. v. Phelps Dodge Refining Corp.,
852 F. Supp. 156 (E.D.N.Y. 1994) 10
United States v. Adlman, 134 F.3d 1194 (2d Cir. 1998) 21, 22
United States v. Adlman, 68 F.3d 1495 (2d Cir. 1995) 16
United States v. Bilzerian, 926 F.2d 1285 (2d Cir. 1991) 31, 32
United States v. Chevron Corp., C-94-1885(SBA), 1996 U.S. Dist. LEXIS 8646 (N.D. Cal. May 30, 1996) 14, 20
United States v. Construction Products Research, Inc., 73 F3d 464 (2d Cir.), cert. denied, 519 U.S. 927 (1996) 18, 19
United States v. Fields, 113 F.3d 313 (2d Cir. 1997) 19
United States v. Kovel, 296 F.2d 918 (2d Cir. 1961) 16
United States v. Montgomery, 1993 U.S. App. LEXIS 5832 (9th Cir. 1993) cert. denied, 509 U.S. 931 (1993) 15
United States v. Nixon, 418 U.S. 683 (1974) 18
United States v. Nobles, 422 U.S. 225 (1975) 30
United States v. Sawyer, 878 F. Supp. 295 (D.Mass. 1995) 27
United States v. Schwimmer, 892 F.2d 237 (2d Cir. 1989) 16, 26-28
United States v. United Shoe Machinery Corp., 89 F. Supp. 357 (D.Mass. 1950) 20
United States v. Weissman, 94 Cr. 760 (CSH), 1996 U.S. Dist. LEXIS 19066 (S.D.N.Y. Apr. 3, 1996) 28
United States v. Zolin, 491 U.S. 554 (1989) 18
United States. v. Davis, 131 F.R.D. 391 (S.D.N.Y. 1990) 14
University of Pennsylvania v. EEOC, 493 U.S. 182 (1990) 16
Upjohn Co. v. United States, 499 U.S. 383 (1981) 10
von Bulow v.von Bulow, 811 F.2d 136 (2d Cir.), cert. denied, 481 U.S. 1015 (1987) 15, 16
Weinhold v. Witte Heavy Lift, Inc., 90 Civ. 2096 (PKL), 1994 U.S. Dist. LEXIS 4559 (S.D.N.Y. Apr. 11, 1994) 23
Westhemeco, Ltd. v. New Hampshire Ins. Co., 82 F.R.D. 702 (S.D.N.Y. 1979) 25
Westinghouse Electric Corp. v. The Republic of the Philippines,
951 F.2d 1414 (3d Cir. 1991) 16
STATUTES
Fed. R. C. P. 26(b)(1) 9
Fed. R. Civ. P. (26)(b)(3) 15
Fed. R. Civ. P. 26(b)(3) 21-23
Fed. R. Civ. P. 26(b)(5) 17
Fed. R. Civ. P. 26(b)(5)) 3
Fed. R. Evid. 501 15
OTHER AUTHORITIES
1 Paul R. Rice, Attorney-Client Privilege in the United States (West 2nd ed. 1999) 10, 12
2 Michael C. Silberberg, Civil Practice in the Southern District of New York,
15.04 at 15-11 (2d ed. 1998) 23
4 James Moore & Jo Desha Lucas, Moore's Federal Practice (2d ed. 1991) 9
6 Edward J. Brunet et al., Moore's Federal Practice 26.70[3][c] at 26-213 (3d ed. 1998) 24
8 Wigmore, Evidence (McNaughten rev. ed. 1961) 9, 16
MPAA Web Site (http://www.mpaa.org) 6